A Special Bench of five judges of the Delhi High Court has held
that had a composite suit in relation to the infringement of a
registered design and passing off, where the parties are the same,
is maintainable in a court of law.
The issue arose in Carlsberg Breweries vs Som Distilleries And
Breweries Ltd (decision of Delhi High Court, on 14 December 2018,
in C.S.(COMM) 690/2018 & I.A. No.11166/2018).
The suit from which the reference arose pertained to
infringement of a registered design, and passing off (of the
plaintiff‟s trade dress) in respect of the bottle and get up
of the "Carslberg" mark. The contention was whether the
two claims (for passing off and design infringement) could be
combined in one suit. The outcome of this case hinged on the
interpretation of an earlier decision of the same court, in Mohan
Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB). The single judge
hearing the suit was of the view that the issue as decided in Mohan
Lal needed
